Register Trademark In Vietnam - Step By Step Guide

HOW TO REGISTER TRADEMARK IN VIETNAM - ADVISE BY LHD LAW FIRM

Register trademark Vietnam: As stipulated by law, an undisputed registration process takes 12-14 months involving three stages: (i) examination as to formality and publication of application (2 months); (ii) examination as to substance (10-12 months); and (iii) issuance of a registration certificate (30 days). However, it often takes quite longer in practice due to the slow process of consideration of applications at the Trademark Office.

What is required for filing a trademark application in Vietnam?

〉For filing a trademark application in Vietnam, the following information and documents are required:
(i) Full name and address of the Applicant (required at the time of filing);
(ii) A phonetic transcription/transliteration and identification of the language used should be indicated if there are any elements of the trademark with wording other than in Roman characters (required at the time of filing);
(iii) A detailed specification of goods and/or services and its corresponding international class, if known (required at the time of filing);
(iv) A Power of Attorney, which is signed by the Applicant. No legalization or notarization is required (required within one (1) month from the filing date);
(v) Fifteen (15) clear print/specimens of the mark of a size, which is not more than 80x80mm and less than 15x15mm (required at the time of filing);
(vi) A certified true copy of the basic application if a convention priority is claimed and its sworn Vietnamese translation (required within 1 month from the filing date).
How long does it take to get a registration of a straightforward trademark application?

〉Is stipulated by law, an undisputed registration process takes 9-10 months involving three stages: (i) examination as to formality and publication of application (3 months); (ii) examination as to substance (6 months); and (iii) issuance of a registration certificate (10 days). However, it often takes quite longer in practice due to the slow process of consideration of applications at the Trademark Office.
What is the estimate of costs for filing a trademark application in Vietnam?

〉The costs for filing a trademark application in Vietnam vary depending o­n the number of goods/services listed in the application.
In particular, the official filing fees are calculated based o­n the number of goods/services listed o­n each application, (i) US$37.00 for the first class not exceeding 06 items of goods/services and US$30.00 per each additional class not exceeding 06 items of goods/services (if any) and US$6.40 per each additional item of goods/services in excess of 06. Meanwhile, our attorney fees are charged based o­n the number of class listed therein at the rates of US$160.00 for the first class not exceeding to 06 items of goods/services and US$100.00 for each additional class not exceeding 06 items of goods/service, and US$3 for each addition item of goods/services over 06.
Accordingly, the estimate of the costs (including both the official fee and our charges) for filing a straightforward application in o­ne class not exceeding 06 items of goods/services is US$197 and for each additional class from the second o­ne not exceeding 06 items of goods/services is US$130. To calculate the costs, please click here.
Is a pre-filing trademark search necessary? How long does it take and how much does it cost?
To avoid the possibility of potential rejection or a risk of opposition, a pre-filing search is highly recommended. The estimate of costs for conducting a similar search is 100.00 USD per class. 50US$ will be additionally charged if professional advice o­n the availability of the mark is required.
A search report can be delivered within 02 to 03 days from the date of receiving client's instructions.
What is a trademark? What are registrable marks in Vietnam?

〉Trademark means any sign used to distinguish goods and/or services of different organizations or individuals.
A trademark may be in the form of word (Vinataba, Chi Long), name (Giorgio Armani, Tien Dat), symbol or device (Ebay device, Thai Tuan device), slogan (Think different, Khoi nguon sang tao), or combination of these elements and is manifested in o­ne or more colors.
Registrable marks must be distinctive. Indistinctive marks include, but not limited to i) simple geometrical shapes, numerical figures, alphabetical letters, letters that cannot pronounced as a word or letter of foreign languages that are not commonly used; ii) marks which indicate time, place, origin, quality, nature, purpose, etc. of the goods/services in question. However, it is possible to secure registration of an inherently indistinctive mark by proving it has become distinctive of the applicant's goods/services through use in commerce (i.e. secondary meaning)
Are three-dimensional trademarks protected in Vietnam?

〉Since July 1, 2006 when the Intellectual Property Law came into force, the protection of three-dimensional mark is officially recognized in Vietnam. The NOIP is very strict in examining the distinctiveness of the three-dimensional mark that relate to the shape of the designated goods or their packages. Generally, if the shape can be recognized as no more than the shape of the designated goods, the shape cannot be registered as a three-dimensional trademark unless it has acquired distinctiveness through long and extensive use.
How are well-known trademarks protected in Vietnam?

〉As a party to the Paris Convention, Vietnam is obligated to give special protection to well-known trademarks. A well-known trademark is defined as a mark that becomes widely known in the whole territory of Vietnam. Rights over a well-known trademark are established based o­n use, not based on registration.
Why should a trademark be registered?

〉Trademarks should be registered with the competent authority to enjoy legal protection. By registration, the trademark owner can protect the right over his mark by preventing others from applying for or using identical or similar marks in respect of identical or similar or related goods and services and thus reducing damages to the benefit and interest derived from the trademark that any third party may cause.

Who can file applications for registration of trademarks in Vietnam?

〉Individuals, legal entities or other subjects lawfully engaged in production activities in Vietnam may, directly or through an Industrial Property Representative Service organization, file applications for registration of their trademarks in Vietnam. For foreign individuals or legal entities that do not have a legal representative or actual production or business facilities in Vietnam, they can file applications for the registration of trademarks through an IP Representative Service organization only.

Is a multi-class trademark application accepted by the Trademark Office?

〉Yes, it is possible to file an application for o­ne trademark covering more than o­ne class of goods/services in Vietnam but subject to be accompanied by the additional fee for each additional class.

How are goods classified in Vietnam?

The international classification of goods/services under Ninth Agreement is currently applied in Vietnam. The specification of goods/services of an application should include those goods/services upon which the mark is used or there is a present bone fide intention to use the mark. Those goods/services must be described in sufficient detail. The indication of goods/services is preferably correlative or equivalent to the basis number listed in the 9th edition of the Nice Classification.
Are class headings applicable in Vietnam?

No. Class headings or general descriptions of the designated goods/services are not applicable to the TM Office. It is necessary to describe such goods/services in full detail.

Is it possible to amend the trademark itself and the designated goods/services under the pending application?

〉Yes. The applicant may amend the trademark itself and/or the designated goods/services under the pending application, provided that such amendments will not change the nature of the mark as filed and/or not broaden the scope of protection of the designated goods/services.

When do trademarks possessing no distinctive characteristics get protection?

〉As stipulated by law, marks which do not possess distinctive characteristics, such as simple shapes and geometrical shapes, numerical figures, alphabetical letters, letters which cannot be pronounced as a word, or letters of foreign languages which are not commonly used shall not be protected. However, such marks shall be eligible for registration if they have been widely used and recognized in the market place.

Is there any advantage to using a trademark before filing an application?

〉Vietnam applies first-to-file system. Therefore, use of the trademark is not a condition for filing an application in Vietnam. However, in the event of a priority conflict between applications filed at the same time, registration will be granted to the applicant who proves the most extensive use.

How are well-known trademarks protected in Vietnam?

〉As a party to the Paris Convention, Vietnam is obligated to give a special protection to well-known trademark. A well-known trademark is defined a mark that has been continuously used for prestigious products/services so that it becomes widely known. Rights in a well-known trademark are established based o­n a decision o­n the recognition of a trademark as well-known to be issued by the Vietnam Trademark Office upon the owner's request.

Is marking of a registered trademark required in Vietnam?

〉The marking of “TM”, “SM” or “®” to trademarks is not required and generally provides no legal protection. Nonetheless, the “®” symbol is used only if the trademark has already been registered in Vietnam.
Can a trademark which is considered confusingly similar or identical to another person's trademark of which the validity has expired or been suspended/cancelled be registered?
A newly applied trademark which is considered confusingly similar or identical to another person's trademark of which the validity has expired or been suspended shall be considered for protection o­nly when the time-period calculating from the expiry date or suspension date of the cited trademark to the filing date of the new trademark application is equal to or exceed 5 years. However, this provision shall not apply to the mark of which the validity is suspended o­n the ground of non-use.
In case of cancellation, the applied trademark shall be considered for protection after the cancellation is completed and the cited trademark’s owner does not proceed with Appeal procedure

What is the term of a trademark registration and how can the mark be renewed?

〉The legal protection of a registered trademark begins from registration date. A registration is valid for 10 years calculating from the accepted filing date of the application and can be renewed for subsequent 10 years term, ad infinitum.
A request for renewal must be filed within six (6) months prior to its expiry date. A request for renewal can be filed later than the above-mentioned period, but not exceeding six (6) months from the expiry date with payment of an extra fee accounting to 10% of a prescribed fee for each month overdue.

Can the trademark itself and the designated goods be changed after being registered?

〉Where there is any change that likely affect the registered trademark, such as change of the owner's name and/or address, or upon the merger, application for amendment must be filed with the Trademark Office for recordal. The registered trademark itself and the designated goods shall not be amended; this provision shall, however, not apply to the restriction of designated goods.

Is proof of use required for obtaining trademark registration?
〉Proof of use is not required at the time of registration and at the renewal as well. A grace period of five (5) years for excusing non-use is provided.

Is there any possibility to file an invalidation action against a registered mark based o­n non-use?

〉Under the current law and practice of Vietnam, the validity of a trademark registration may be terminated if it is not used by the owner or transferred to others for use within 5 consecutive years calculated backward on time from the date on that a request for termination is filed by a third party, except where the trademark has been used or re-used at least 3 months before the filing date of the request. The burden of proof of use is o­n the Registrant.

Should the specific royalty amount be indicated in the license agreement?

〉A specific royalty amount must be indicated in the trademark license agreement. In practice, the parties concerned may agree o­n the actual royalty amount separately, whatever royalty amount indicated in the agreement shall be recorded in the decision o­n registration of trademark license agreement issued by the Trademark Office upon registration of the license.

Is a trademark license required to be registered at the Trademark Office?

〉Yes. It is an obligation to record a trademark license with the Trademark Office. The effective date of the license is the recorded date at the TM Office.

How is the procedure for responding to an examiner's rejection of an application?

〉A response to the examiner's rejection of an application must be filed within 2 months from the date of issuance of the notification. The examiner must re-examine the application in the view of the response made by the Applicant and the result thereof must be available within 04 to 06 months from the filing date of the response. If dissatisfied with the examiner's decision, a further appeal can be filed with the TM Appeal Board within the TM Office.

How is the procedure for appealing against a decision of refusal of an application or a decision of refusal of granting a registration certificate?

〉An appeal against the decision of refusal of an application or the decision of refusal of granting a registration certificate must be filed with the TM Appeal Board within 03 months from the date of issuance of the decision. The TM Appeal Board must examine and settle the matter within 30 days from the date of receipt of the appeal. However, such period is often longer in practice. It may be months or few years. If dissatisfied with the TM Appeal Board's decision, a further appeal may go to the Ministry of Science and Technology or can be taken before the competent administrative court.

Is it possible to prevent others from using marks identical or similar to a trademark in a pending application?

〉No. In Vietnam, trademark rights to a trademark are only established o­n the basis of certificates of registration of trademark issued by the TM Office. O­nce the trademark is still in a pending application, the trademark protection has not yet been effective and therefore the owner has no right to prevent others from using the identical or similar marks.

What types of remedies may be available in case of infringement?

〉Different remedies are available when a registered mark is infringed including administrative, civil and criminal proceedings. (For details see Enforcement of Rights)

⭕ How to register trademark in Vietnam | Step by step guide

STEP 1: SEARCH BEFORE APPLICATION (LOOK UP TRADEMARK) 

This step aims to reduce the risk by up to 90% when filing a new trademark application

Without this step: Waiting period 24-26 months (no work) Loss of application fee and building the brand 

Therefore: SEARCH TO GUARANTEE THE REGISTRATION PROCEDURE ACHIEVING THE BEST RESULT.

REFERENCES OUR SEARCHING SERVICE PRIOR APPLICATION ⇒  REFERENCES 

STEP 2: APPLICATION FOR PRIORITY DATE (NOIP)

The application can be done through the NOIP or self-file

If you submit yourself, you can contact at 3 offices of NOIP in Hanoi, Da Nang and Ho Chi Minh

Trademark registration dossiers are filed at the National Office of Intellectual Property at the following addresses

#1. Get the application number and priority date

#2. Start examining the application → For trademark registration purposes

STEP 3: FORMALITY EXAMINATION OF APPLICATION

Term of examination: within 02 months from the filing date.

Purpose of application examination

Check the compliance with the regulations on the form of the application, thereby making a conclusion whether the application is considered valid or not (Make a decision to accept the valid application / refuse to accept the application[1]).

+ In case the application is valid, the NOIP shall issue a decision to accept the valid application;

+ In case the application is invalid, the NOIP shall issue a notice of its intention to refuse to accept the valid application, clearly stating the reasons and omissions that cause the application to be refused for acceptance and setting a time limit 2. months for the applicant to comment or correct errors. If the applicant fails to correct errors/unsatisfactory corrections/no objections/unwarranted objections, the NOIP shall issue a decision to refuse to accept the application.

STEP 4: PUBLICATION OF TRADE REGISTRATION APPLICATION

Time: Lasts for 4 months from the date of the decision to accept the valid application

Purpose of application publication:

In order to widely notify other individuals and organizations that the application has been published, if there is a lawsuit or objection to the application, contact the NOIP to carry out procedures to oppose the grant during this time.

STEP 5: APPLICATION CONTENTS ASSESSMENT

Time: 12-14 months from the date completing the application publication

Purpose: Time limit for substantive examination: 10-12 months from the date of application publication (actually 2 years because NOIP is overloaded with application processing)

The National Office of Intellectual Property considers the conditions for trademark registration, thereby assessing the possibility of granting a title to the trademark registered by the enterprise.

If the trademark registration application meets all conditions, the National Office of Intellectual Property shall issue a Notice of intention to grant a diploma for the trademark registered by the enterprise.

If the trademark registration application does not meet the conditions, the National Office of Intellectual Property shall issue a Notice not to grant a diploma for the trademark registered by the enterprise. The enterprise considers and sends a response letter, complains about the decision of the National Office of Property, and at the same time provides the grounds for granting a trademark protection title to the trademark of the enterprise.

STEP 6: DECISION TO ISSUE OR REFUSE TO GRANT TRADEMARK CERTIFICATE

There are 2 situations below:

#1. Approval for issuing Certificate 

The Department will issue a decision to notify the grant of the Certificate, the applicant will pay the fee according to the instructions and wait for 1-2 months. The Department will send the Certificate to the head office for the applicant.

If the fee is not paid, the applicant will be deemed to have abandoned the registration, and when the notice period expires, the trademark will not be protected.

#2. Refusal for issuing Certificate

The Department will make a decision to refuse to grant a trademark title, and the applicant within 3 months has the right to submit a written objection or agreement with the decision to partially reject this trademark.

If it is considered that the opinion of the Department is reasonable, then skip this step, otherwise, if you think the decision is unreasonable, you have the right to give your opinion on the fight to be granted a diploma.

STEP 7: RECEIVING DECISION OF ISSUING CERTIFICATE OR REFUSAL DECISION

There are 2 situations below:

#1. The department agrees to grant the Certificate according to the objection of the Applicant

The Department will issue a decision to notify the grant of the certificate, the applicant will pay the fee according to the instructions and wait for 1-2 months The Department will send the certificate  to the head office for the applicant.

If the fee is not paid, the applicant will be deemed to have abandoned the registration, and when the notice period expires, the trademark will no longer be protected.

#2. Refusing to grant certificate due to unreasonable opinions

The Department will make a decision to refuse the grant of a trademark certificate, and the Applicant is no longer able to comment but will have to go through the consultation procedure with the NOIP, with this decision, the applicant has 12 months to settle the complaint..

Term of trademark protection

Trademarks are protected for 10 years from the filing date (priority date). Enterprises can renew their protection titles and there is no limit on the number of renewals. Therefore, the trademark will be an asset throughout the operation and business process of the enterprise.

DETAILED INSTRUCTIONS FOR STEPS TO PERFORM

→ What You Can And Can't register Trademark

→ Trademarks 

→ What is not related to the trademark

Name as Nike

A logo as logo swoosh

Slogan as "Just do it"

An original song, book, movie, or other creative work. Get a replacement license

An invention such as a technical process, machine, manufactured product, or chemical formula. Patent review.

☖ RIGHTS FOR TRADEMARK REGISTRATION?

→ Individuals or organizations (ordinary organizations are companies) with Vietnamese nationality are entitled to register trademarks (Individuals, Start-ups, Companies, Enterprises, Organizations)

→ Individuals or organizations (Companies as usual) with foreign nationality are entitled to register trademarks, but they must go through the INDUSTRIAL PROPERTY REPRESENTATIVE Organization in VIETNAM (LHD LAW FIRM IS AN EXAMPLE).

☖ GENERAL TYPES OF TRADEMARKS

– Generic Mark

– Suggestive Mark

– Certification Mark

– Collective Mark

– Famous Mark

Among them, Generic Marks are considered the most popular

REQUIREMENT DOCUMENTS FOR INDUSTRIAL PROPERTY (IP) REGISTRATION APPLICATIONS

# LOGO/TRADEMARKS

# POWER OF ATTORNEY (AS FORM OFF LHD LAW FIRM)

NEW POINTS IN TRADEMARK HANDLING OF THE INTELLECTUAL PROPERTY DEPARTMENT IN 2021

Point #1. Classification applies according to Nice 11→ Noip requires to specify each code in detail (for example, before it was generally stated as buying and selling agricultural products (acceptable), now it must specify what agricultural products are - agricultural products are cashew nuts, coffee beans . ..vv

Point #2. Processing time is much longer than reality (previously about 18 months, now up to 26-28 months from the date of application) → Reason: Noip said the number of applications increased more than 10 times, but the specialists did not increase, so the application was delayed.

Point #3. The Data Noip provided on the website is not enough (When the label is published in the Official Gazette, it is recorded on the website) so it is mandatory when registering the Application Owners to conduct a search and evaluation before submitting the Application → In order to ensure the ability to successful registration in Vietnam.

SHOULD YOU USE TRADEMARK REGISTRATION SERVICE ?

IF YOU DO NOT KNOW THE REGISTRATION PROCESS, HOW TO SEARCH TO ACHIEVE THE OBJECTIVE, YOU SHOULD USE THE TRADEMARK REGISTRATION SERVICE

LHD IS A PRESTIGE CONSULTING COMPANY (REPRESENTATIVE OF NOIP)

In more than 12 years of operation, Hong Duc Law has successfully registered for more than 168888+ trademark applications in Vietnam, of which 20% are foreign customers and 80% of domestic customers have trusted our services.

☑ WHY DO YOU CHOOSE LHD LAW FIRM WITH TRADEMARK REGISTRATION SERVICE?

1 #. LHD Law Firm is rated as the most prestigious trademark logo registration organization in Vietnam which is highly appreciated by Legal500.

2 #. Certificate No. 146 issued by NOIP  

As a representative of NOIP We will directly work with the Department, submit applications, pay fees, receive notices, comments and receive diplomas for foreign and Vietnamese organizations and individuals.

Our three-no's criterion

- No need for the applicant to sign the application

- There is no need for the applicant to directly monitor the application

- There is no need for the applicant to work directly with the Department (such as sending official letters, paying fees...)

3 #. LHD Law Firm is considered as a friendly and reasonable consultant, the main purpose is to support businesses and individuals doing business in Vietnam to protect their trademarks and logos.

→ QUESTION CONCERN ?

1. WHERE CAN WE APPLY FOR TRADEMARK CERTIFICATE ?

There are 2 ways for application

#1. Apply at the Intellectual Property Office

#2. Apply via Representative of the NOIP

LHD Law Firm is Representative → contact

2. DOCUMENTS FOR TRADEMARK REGISTRATION?

Profile components include:

Trademark sample (05 samples, size not larger than 80×80 mm); A copy of the document certifying the legal business right (Business License or Certificate of Business Registration, etc.); Documents certifying the legal right to file (if any)

Power of attorney through a representative

3. HOW MUCH DOES IT COST TO REGISTER FOR A TRADEMARK??

SERVICE FEE (PLEASE CONTACT TO GET THE BEST QUOTATION)